IPR IN THE BUSINESS OF SPORTS

Written by: A.Anchirppa

Abstract: 

There is nothing permanent except change! The social change of a physical activity into a sport had a lot to do with war, ritual and entertainment. From there it took course as a recreational activity enjoyed by a majority which then took another mammoth transformation due to commercialization. Commercializing sports attracted a lot of revenue and with it grew activities like branding, licensing etc. Thus, commercialization also assisted in creating a lot of intellectual property and thus invokes the intersection of intellectual property rights with sports. This article concentrates on the creation, usage and the enforcement of various intellectual property rights associated with sports and also various legal issues arising from the intersection of these two areas. 

Key words: Sports law, Intellectual property rights, Commercialization, Enforcement of Rights. 

Introduction:

Sports can be compared to compressing your life into a two-acre space which is filled in with lots of emotions, ups and downs where the past and the future transcends to form the present. Sports also provides arena to witness and celebrate the greatness of human spirit. Thus, from a social perspective sports play a vital role in uniting people from different backgrounds for a single purpose. 

On the other hand, from an economic perspective creativity and novelty are two key facets in the world of sports which assists the players to continue to excel in their field. This creativity and novelty are undertaken by the backstage players who expand the boundaries and create new opportunities for players to double up their game. One such invention and creativity was behind Nike’s first pair of running shoes which was inspired by waffles. Nike’s co-founder Bill Bowerman was having breakfast when he got a spark that the grooves in the waffle iron which his wife was using can be used as a mould to running shoes[2]. Thus, sports play an important role in proving opportunity for creators, creating investments and mobilizing resources from these creations. Intellectual Property Rights comes in the way to protect all these creations and add further value to them and help in gaining hefty profits. 

Intellectual property rights can be characterized as pieces of information which can be incorporated in tangible objects at the same time in an unlimited number of copies at different locations anywhere in the world. The property is not in those copies but in the information reflected in those copies or the information created in these copies[3]. Thus intellectual property rights empower an individual or an entity to gain benefits from their intellect for a limited duration.

This article makes an attempt to analyse the various intellectual property rights attached with the arena of sports because in the era of globalization it is important to protect the intellectual property and create value for it. 

Trademark in action:

Branding:

As you wait to enter into a stadium you can see a lot of things that depict the name of the sponsor, their title, logos, team names etc in the form of t-shirts, caps, jersey, goodies (mug, badges etc). This is a way of branding their products. Branding in the sports world is necessary for identification, creation of fan base and also generating substantial revenue[4]. Sports branding is a giant industry that earns millions of revenue. Sports has a reputation and a commercial value because of the trademark rights linked to it. Trademark helps us in differentiating the goods and services from one entity to the other and they are potentially recognized as intellectual rights. The public rating of sports based on popularity also depends on trademark. For example, WWE (World Wrestling Entertainment) formerly known as WWF had a long legal battle for use of the abbreviation WWF which also meant World Wildlife Fund. In 2002 WWF (wrestling) agreed to stop using the same abbreviation and changed to WWF[5]. Thus protecting trademarks ensures commercial value of the brand.  

Players and trademark:

As the game commences, the crowd starts to settle in the stadium and cheer for the players. Some of the players use intellectual property to control the use of certain image that they are associated with. For eg Usain Bolt’s – “lightning pose” and his slogan “Bolt to the World” and Michael Jordon’s “jumpan pose” are registered trademarks. Messi vs Massi is an another interesting and a long legal battle of Lionel Messi for registering his trademark “Messi” under European Union Intellectual Property Office (EUIPO) which was challenged by “Massi” a Spanish company manufacturing clothing, shoes, bicycles, helmet etc. The General Court ruled in favour of Messi concluding that the degree of similarity between the marks is not sufficiently high to accept that the relevant public may believe that the goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings[6]. Recently an English footballer named Jesse Lingard tactically applied for four trademarks with the UKIPO. Three of the trademarks feature his nickname ‘Jlingz’ and another features the image of his goal celebration (exhibited in England’s win over Panama) in which Lingard hides his head behind his hands, which have been shaped into his two initials[7].

Registration:

To register a trademark internationally the entity has to apply in a national or regional trademark office or by filing an application under WIPO Madrid System. Registering a trademark gives exclusive right to that entity to use the same. A trademark may consist of words, letters, numerals, drawings, symbols. It may also consist of three-dimensional features, such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or shades of colour used as distinguishing features.[8]  

Under WIPO Madrid System for International Registration of Marks is a cost-effective and convenient way for an entity to apply for a trademark over 122 countries by a single window system. After obtaining an international trademark registration an entity has to pay additional fees to extend the geographic location, modify or renew the trademark. Under Indian Trademark Act, 1999 there is a classification of various goods and services. Each class requires a different registration. Class 21 and class 25 under the Act recognizes goods like mugs, clothing, headgear etc. Registration of a trademark is a simple process which can be done by lawyers. 

Domain Name:

If you want to know information or updates regarding your favourite sports team through internet, then we end up visiting their official web page. The choice of domain name for an entity becomes an important business decision as the internet users can track you down through the domain name. While choosing a domain name the entity has to be sure that it does not resemble the existing names. This is because using a similar domain name attracts infringement of existing trademark also known as cyber-squatting. Domain disputes occur when multiple entities claim right over the use of the same domain names. So, a person or an entity before fixing a domain name can check if the same domain name is registered. WIPO also provides a Trademark Database Protocol where on-line trademark databases and have made accessible to the public through their websites to avoid domain name disputes.[9]

Money is a significant factor for people engaging in these practises. If a person buys a domain name before the trademark owners had a chance to do so, the same can be sold to them for a higher price. Bad faith is another prevailing motive for engaging in cyber-squatting.

To tackle domain name the technical management of domain name system is done by ICANN (Internet Corporation for Assigned Names and Numbers). WIPO’s Uniform Domain Name Dispute Resolution Policy (UDPR) is accepted worldwide for resolving domain name disputes outside traditional court system. If an entity finds that their domain name is cyber squatted a simple online application has to be made where an independent expert will decide the issue through WIPO’s Arbitration and Mediation Centre, without the need for any court litigation.

WIPO’s Arbitration and Mediation Centre plays a key factor in resolving domain name disputed especially in the field of sports. A best example is a cyber-squatting issue brought by England football star Wayne Rooney. The respondent was a fervent fan of Wayne Rooney that he registered the domain name waynerooney.com together with waynerooney.co.uk in April 2002 when the player was unsung. He scored a goal six months later against Arsenal which made headlines and he was named as the youngest goal-scorer in the history of the Premiership. Wayne Rooney and his management company, which owns a trademark for the words Wayne Rooney filed a case under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP). It was concluded that the respondent had anticipated the growth of Wayne Rooney and had registered the domain names in the hope of extracting commercial benefit. This registration was seen as one done in bad faith, regardless of the fact that he had never got around to using the domain name. It was ordered that the domain name be transferred to Wayne Rooney and his management company.[10]

Copyright:

If we don’t get an opportunity to witness a game live, then we sit back relaxed in our couches and watch it comfortably from our home. While the players warm up, television lights are switched on, broadcast audience are welcomed there again intellectual property rights in the name of copyrights come into action. The hallmark of any culture is excellence in arts and literature. Any art needs healthy environment and sufficient protection. Copyright plays a critical role in maintaining the vitality of sports, keeping fans interested and inspired, and enhancing value and at the same time protecting the ideas behind it. Copyright can be seen in the artistic work behind the designs and logos of various sports team. It also plays a vital role behind the literature contained in the day game program, software of the computer and online games. 

Copyright in sporting events:

In India copyrights are governed by The Copyright Act, 1957. The question which arises is whether sporting events can be included under the meaning of Copyright under section 14 and more specifically under the term “dramatic works”. For this we can categorize the sporting activities into

  • ‘adversarial’ sports or ‘head-to-head competitions’ includes sports games such as football, baseball, basketball, cricket.
  • ‘aesthetic’ or ‘choreographed’ sports comprises figure skating, cheerleading, synchronized swimming, acrobatic gymnastics, ice dancing, ballroom dancing and wrestling.
  • ‘routine-oriented activities’, which is designed to achieve fitness and health, such as yoga and Pilates.

Inclusion of protection for these sporting activities needs to be examined with other countries also. The European Community in their White Paper on Sports has suggested that depending upon the specificity of the sport protection may be awarded[11]. In the joined cases involving Football Association Premier League v QC Leisure and Karen Murphy v Media Protection Services Limited the Court of Justice of the European Union (CJEU) acknowledged that “sports events such as football matches cannot be considered intellectual creations or works and so cannot be protected by copyright.”[12] In Baltimore Orioles, Inc v. Major League Baseball Players Association, it was decide by the US Courts that baseball game is not copyrightable because it lacked artistic merits. The same view has been adopted in India in Institute for Inner Studies v. Charlotte Anderson, citing the reason of unpredictability and fixation. 

As per the classification of sporting events the ‘adversarial’ sports or ‘head-to-head competitions’ cannot be given protection considering it very unpredictable. With regards to choreographed sports if moved from the competitive sports category into the non-competitive one, this might strengthen their eligibility for copyright protection under “dramatic work”. Exercise routines, such as yoga are being adapted to a system or process, where no copyright subsists. 

Lights, Camera, Copyrights:

With advancements in science and technology it has revolutionized sports broadcasting enabling millions of people to take part in the enjoyment. All major sport events can be streamlined live anywhere in the world which increases the zeal among the fans.  The main source of fund comes from broadcasting and media rights. This is the biggest source of revenue which helps in generating funds for conducting major sporting events, construction of stadiums and to contribute to the development of sports from the grassroot level. The reason behind giving protection is to safeguard the investment and to recognize and reward the entrepreneurial efforts of broadcasting organizations.

The International Convention for the Protection of Performers, producers of Phonograms and Broadcasting Organizations – Rome Convention, 1961 allows the broadcasters to have exclusive right to rebroadcast, reproduce and communicate it to the public for 20 years.[13] But with the growing nuances in technology it is light time to update and accommodate the laws to the present digital world.  

Sports industry has become a billion-dollar industry mostly because of the efficient use of intellectual property, it is also a prey for piracy. Live telecasts have been a target for this piracy. Although national law and law enforcing bodies are closely watching on piracy by shutting down illegal websites, the broadcasters have demanded a better legal protection. On the other hand, broadcasters are also having their viewers engaged by providing sports coverage in different formats. 

Patents:

Evolution of sports cannot be tracked without the patent literature attached to it. Where athletes and sports men are breaking their own records and reaching greater heights, patents work in parallel with them in overcoming the obstacles faced by the sportsmen through their inventions. 

Patent is a limited monopoly right granted to an inventor to use, exploit, work and sell his invention in respect of either a process or a product. The patents given for an invention and not a discovery. According to Article 27 of TRIPS, patents shall be provided for inventions provided that they are novel, involve a non-obvious inventive step and is capable of industrial application. 

Earlier basketball was played with soccer ball. A proper ball was needed to meet the peculiarities of this game. In 1929, George L. Pierce was awarded the first patent (US1718305) for a ball specifically designed for “basketball”.[14] Inventions were not only made for players but also the spectators. Hockey was a popular sport but was not watched by many television watchers because the size of the puck is too small and gives poor visibility to the viewers. So, in 1996 a patented technology was invented to make the puck more visible by installing an electromagnetic transmitter inside the puck so that it transmits electromagnetic signals outside the visible spectrum that can allow the puck bigger or brighter for the television viewer.[15]

Many more inventions with regards to shoes, ball, bats including swim suits. In Beijing 2008 Olympics several world records were made with significant contribution from the swimsuits because it reduces the entry of water between the swim suit and the body and assists in swift swimming.[16]

Therefore, patent protection for new inventions safeguard other parties from infringing and also gives a commercial interest to the patent holder for a period of 20 years after registration. In India patents are governed by the Patent Act, 1970 which also provides civil and criminal remedies. Patent Cooperation Treaty makes it possible to receive patent in 153 countries around the globe by filing an “international patent application”.   

Patent for sports moves:

  There have been various patents for sports move in United States of America but not in India or United Kingdom. Some sport moves are made spontaneously in the field while the other moves may have been practised by the by the sportsperson but not without the abled guidance of the coach. So in these cases should we call the coach as the inventor or should the credit be given to the player for practising and putting the move into action. There are arguments for and against granting patents for sports move.  

The career of a sports person is very less when compared to any other profession so he should be entitled to receive a patent to make sure they are financially independent after retirement. On the other hand, patenting a sports move may always make one team as the winning team which is against the interest of the public and the fans will also lose interest in the game. Granting patents for sports move also restricts the body movement of other players on the ground because the thought of imitating a sports move will end up in paying damages will always linger behind his mind. If patent is granted the ownership of the patent is also questionable. Will the player have the benefits of it the company which sponsors the player. For all these reasons it is good to restrict patents to sports move as it will ensure fair competition and no player will take unfair domination on the other players. 

Industrial Designs:

  Another intellectual property right which can be linked to sports is industrial design. How different is industrial design from patent? Patents are given only for new inventios involving technology which completely focuses on functionality and content whereas industrial design concentrates only on appearance, shape, pattern and its aesthetic look. In order to obtain an industrial design, the design must be original, must be related to shape and configuration and not the functionality and should be able to be used in industrial process.

Design makes the product look creative and plays a vital role in adding commercial value to it. Companies invest huge sum of money in design to fulfil the customers changing demands. Therefore, protection of industrial design encourages creativity in manufacturing sector and also gives protection against companies making similar products.   

In India The Designs Act, 2000 provides for registration of a design and also provides remedies for the same. The Hague System for the International Registration of Industrial Designs helps in registering a design worldwide over 90 countries by filing a single international application. 

Conclusion:

The sports industry has a large number of participants ranging from stakeholders, sponsors, players, broadcasters etc. After commercialization of sports a lot of revenue has been flowing into this sector by means of Intellectual property rights and its usage. Many players in the market start to exploit and infringe the intellectual property which make the earn profit by exploiting others intellectual property rights. Business knowledge and understanding alone is not enough to run the business of sports, legal intricacies surrounding intellectual property rights is also necessary to run the business successfully. 

As the value of sports and its importance grows day by day, business also grows along with-it paving way for many more inventions and enlarging the scope of intellectual property right with sports. With this growing industry one more problem faced is ambush marketing. Ambush marketing is where a rival company associates with the event, its logo etc when there is an official sponsor. Ambush marketing is an increasing risk for the business of sports and India does not have clear law or a regulation which provides solution for it. Most of the cases related to ambush marketing are dealt under intellectual property rights. It is high time India has a separate law to prevent ambush marketing. 

It is also highly recommendable to opt alternate dispute resolution for resolving issues relating to sports and IPR. As trade secret is not a form of recognised intellectual property right a new law referring exclusively to trade secret will also help in making the business of sports more sustainable and profitable. 

Since a gargantuan amount of profit into the business of sports is injected by way of intellectual property rights regular IP audits and registration of new invention at the proper time will ensure protection of IP rights. India has to have a serious look into building a business model for sports with effective IP rights strategy so that the interest of the Indian citizen associated with these are benefited.    

References

[1] The Central Law College

[2]  Hayley Peterson, The bizarre story behind Nike’s first pair of running shoes, Business Insider, (April 8, 2020, 12:48 p.m), https://www.businessinsider.in/retail/the-bizarre-story-behind-nikes-first-pair-of-running-shoes/articleshow/47962944.cms.

[3] Balew Mersha G/Hiwot Hadush, Concept, Scope and Nature of Intellectual Property Rights, Abyssinia Law, (April8, 2020, 01:34 p.m), https://www.abyssinialaw.com/online-resources/study-on-line/item/467-concept-scope-and-nature-of-intellectual-property-rights.

[4] Barbu, Mihai & Popescu, Marius, Branding in sport, University of Targu Jiu, Economy Series, 35-41 (2018)

[5] Richard Sandomir, Wildlife Fund takes down wrestlers in name game, The New York Times, (April 8, 2020, 03:33 p.m), https://www.nytimes.com/2002/05/07/sports/sports-business-wildlife-fund-takes-down-wrestlers-in-name-game.html

[6] Press Release No 56/18, Judgment in Case T-554/14, General Court of European Union (April 8, 2020, 04:48 p.m) https://curia.europa.eu/jcms/upload/docs/application/pdf/2018-04/cp180056en.pdf 

[7] Football Players and Trademarks, IP Copy, (April 8, 2020 04;50pm), https://ipcopy.wordpress.com/2018/06/28/football-players-and-trade-marks/

[8] The International Trademark System and Sports, WIPO (World Intellectual Property Organization, (April 8, 2020, 03:46p.m), https://www.wipo.int/ip-outreach/en/ipday/2019/madrid_trademarks_sports.html

[9]Trademark Database Protocol, WIPO (World Intellectual Property Organization, (April 9, 2020, 09:58 a.m.), https://www.wipo.int/amc/en/trademark/.

[10] Cybersquatter or Innocent Fan? – The Wayne Rooney Domain Name Dispute, WIPO Magazine, Issue 6/2006 (April 9, 2020, 10:50 a.m), https://www.wipo.int/wipo_magazine/en/2006/06/article_0008.html

[11] White Paper on Sport, Commission of European Communities, (April 9, 2020, 11:50 a.m), https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52007DC0391&rid=2 

[12]  Intellectual Property Rights and the Specificity of sports, WIPO Magazine, Issue 2/2019 (April 9, 2020, 11:50 a.m),

[13] Summary of the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (1961), WIPO, Administered Treaties (April 9, 2020, 03:30 p.m.), https://www.wipo.int/treaties/en/ip/rome/summary_rome.html.

[14] Vitor Moreira, Worldwide: The Role Of Patents In Sports, Inventa International, (April 9, 2020, 07:10 p.m), https://inventa.com/en/news/article/415/the-role-of-patents-in-sports.

[15] Ibid.

[16] Ibid.